DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Terminal Disclaimer
The terminal disclaimer filed on 09/08/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 18/037,416 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Status of Claims
Claims 1-3 and 5-6 are amended. Claim 4 is cancelled. Claims 1-3 and 5-6 are examined herein.
Status of Previous Rejections
The rejections of claims 1-6 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, have been withdrawn in view of the amendment.
The rejections of claims 1-3 under 35 U.S.C. 102(a)(1) as being anticipated by JP’616 (JP 2013-095616) have been with drawn in view of the amendment.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as being unpatentable over Edwin (US 2007/0215520, IDS dated 02/18/2025).
Regarding claims 1-3, Edwin teaches a method, comprising: preparing metal catalyst particles such as nickel powder, iron powder or cobalt powder having mode particle size in the range of 5-100 µm ([0019] to [0023]); supplying a hydrocarbon gas such as methane to the metal catalyst particles, and contacting between the hydrocarbon gas and the metal catalyst particles being carried out at a temperature of 350-1200 ºC with a preferred temperature of 630°C to 680°C ([0019] to [0036]), which meets the limitations recited in claim 1.
Edwin does not explicitly disclose that the powder catalyst particles are changed to submicron metal powder as recited in claim 1. However, in view of the fact that Edwin teaches that the raw materials are methane and nickel or iron powder that are the same as the raw material as recited in claims 1 and 3, and the reaction is conducted at 630°C to 680°C, which meets the reaction temperature recited in claim 1, one of ordinary skill in the art would expect that that the iron powder or nickel powder will become submicron sized powder in the process of Edwin as recited in claim 1. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Edwin discloses that catalyst and produced carbon are separated from each other ([0050]), which meets the limitation recited in claim 2.
Regarding claim 6, Edwin discloses supplying hydrogen to the catalyst particles before the step of supplying the feed gas to the catalyst particles ([0049]), which meets the limitation recited in claim 6.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Edwin (US 2007/0215520).
Regarding claim 5, Edwin discloses that the feed gas comprises methane and Co at a ratio of 10:90 to 90:10 ([0030]), which converts a partial pressure of methane of 0.0101 to 0.0909 MPa. Thus, the partial pressure of hydrocarbon disclosed by Edwin overlaps the recited partial pressure in claim 5. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, claim 5 is obvious over Edwin.
Response to Arguments
Applicant's arguments filed 09/08/2026 have been fully considered but they are not persuasive.
First, the applicants argued that Edwin explicitly states that its catalyst becomes a "catalyst/carbon agglomerate" as a result of the reaction. Thus, a phenomenon of enlargement and agglomeration occurs, which is exactly the opposite of the present claims in which particles are divided and micronized into individual submicron particles.
In response, claim 1 only recites that the metal particles are submicron-sized particles. Claim 1 does not recite that the catalyst and carbon are not agglomerated.
In view of the fact that Edwin teaches that the raw materials are methane and nickel or iron powder that are the same as the raw material as recited in claims 1 and 3, and the reaction is conducted at 630°C to 680°C, which meets the reaction temperature recited in claim 1, one of ordinary skill in the art would expect that that the iron powder or nickel powder will become submicron sized powder in the process of Edwin as recited in claim 1. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Second, the applicants argued that because the reaction described by Edwin (630 to 680°C) does not reach the austenite transformation point of iron (727°C or higher), micronization accompanied by microstructural changes (such as the generation of grain boundaries and migration), unlike in the method of the present claims, does not occur.
In response, claim 1 recites the temperature is 600-900 ºC. Edwin discloses that contacting between the hydrocarbon gas and the metal catalyst particles being carried out at a temperature of 350-1200 ºC with a preferred temperature of 630°C to 680°C ([0019] to [0036]), which meets the recited temperature in claim 1. The applicants have not provided valid data to show that 630°C to 680°C is not sufficient to reduce the particle size to submicron size for iron and nickel powder. Since Edwin teaches a temperature that is within the recited temperature in claim 1, one of ordinary skill in the art would expect that the particles size after reaction at 630°C to 680°C in the process of Edwin meet the recited particle size in claim 1.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 5712721401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/XIAOWEI SU/Primary Examiner, Art Unit 1733
Prosecution Insights